Bombay High Court
Laser Shaving India Private Limited vs Rkrm International Products Private … on 6 April, 2026
Author: Bharati Dangre
Bench: Bharati Dangre
2026:BHC-OS:9090-DB
1/38 8 IAL 26994-25.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO. 26994 OF 2025
IN
COMMERCIAL APPEAL (ST) NO.26806 OF 2025
Laser Shaving India Pvt Ltd .. Applicant/Appellant
Versus
RKM International Products Pvt Ltd & .. Respondents
Ors
...
Mr. Rohan Kadam a/w Ms. Rucha Vaidya, Mr. Ashutosh Kane, Ms.
Vedangi Soman, Ms. Sumana Roychoudhary i/b W.S. Kane and Co.
Advocate for the Appellant.
Mr. Carl Patel a/w Mr. Gaurav Beyani, Advocate for the
Respondents.
CORAM: BHARATI DANGRE &
MANJUSHA DESHPANDE, JJ.
RESERVED ON : 19th JANUARY, 2026
PRONOUNCED ON: 6th APRIL, 2026
JUDGMENT (PER BHARATI DANGRE J)
1. The present Commercial Appeal is filed by the Original
Plaintiff, Laser Shaving (India) Pvt Ltd (hereinafter referred to as
Laser Shaving) being aggrieved by the impugned order passed by the
learned Single Judge on 25/06/2025, thereby dismissing the
application by recording that applicant has failed to establish prima
facie case and also that the applicants iniquitous conduct disentitle it
for any relief.
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2. We have heard learned counsel, Mr. Rohan Kadam, for the
Appellant and learned counsel Mr. Carl Patel for the Respondents.
Since a consensus is expressed by the respective counsel to take up
the Commercial Appeal for hearing, instead of adjudicating on the
Interim Application, seeking stay of the impugned order dated
25/06/2025, we have taken up the Appeal for hearing.
3. Before we pronounce upon the legality and justiciability of the
impugned order, in the wake of the arguments advanced by Mr.
Kadam, countered by Mr. Carl Patel, we deem it appropriate to refer
to the background facts leading to the filing of the Suit and
subsequently refusal of the injunction as claimed by the Plaintiff
through the Interim Application No.110 of 2025, filed in the Suit.
4. It is the case of the Plaintiff, that it is a company incorporated
under the Companies Act, 1956 and is engaged in the business of
manufacturing and selling inter-alia safety razors, safety razor blades,
shaving systems and like goods.
As per the plaint, it is an old, established and reputed
manufacturer and seller of safety razor blades which are sold world
wide and the company vouches for its quality. According to the
plaint, the goods belonging to the Plaintiff are available across the
world including U.S.A, Europe, the Middle East, amongst others and
the goods are popular in Men’s personal care and grooming industry.
As per the plaint, the Plaintiff secured ISO certification for its
product and also bagged several prestigious international awards,
which stand testimony to the superior quality of its goods.
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It is the claim of the Plaintiff that with constant innovation and
highest decree of precision the product manufactured by the Plaintiff
has enhanced the shaving experience and the Plaintiff expanded its
business activity to cover deodorants, after shave skin conditioners,
shave gel, after shave splashes and bath gels etc.
In the course of its business activity, the Plaintiff adopted
various distinctive trade marks to be used upon and in relation to its
goods/ business and it coined and conceived mark “SETMAX” by
commissioning one Mr. Palala Dwarka Nath, a graphic designer, to
design and create the artistic work ‘SetMax Platinum Blades’. The
packaging / trade dress designed, according to the Plaintiff is original
and unique artistic work created by a graphic designer, for valuable
consideration and the creation of it required a substantial investment
of labour, time and capital. The Plaintiff therefore claimed that it is
the owner of the copyright subsisting in the said artistic
packaging/trade dress reflected below:-
5. This was followed by the Appellant procuring printing material
for commencing manufacture of goods under the ‘SETMAX’ trade
mark and started using the packaging with its use.
In continuation of this venture, the Plaintiff applied for
Trademark registration of the Trademark ‘SETMAX’ in Class 08 on a
‘Proposed to be used basis’ on 1/09/2023, and at this stage, we must
note that the same is being granted in favour of the Laser Shaving on
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1/01/2026.
6. On an application being made for registration of the Word
Mark, the Plaintiff commenced the sale of razor shaving blades under
its mark “SETMAX” and in the distinctive red packaging, bearing the
art work.
According to the Plaintiff, it enjoyed sales of Rs. 6 crores from
September, 2023 to January 2024 and it spent a whopping sum of
Rs. 1.31 crores for advertising and promoting its “SETMAX”
shaving blades. The Plaintiff thus claim that it had acquired propriety
and common law rights in the packaging/ trade dress/ trade mark and
is entitled to its exclusive use in relation to the said goods/similar
goods and use of the same and/or deceptively similar packaging/
trade dress/ mark in respect of the same/ similar goods and /or
cognate, allied and/or complementary goods by any other
manufacturers and/or traders would amount to passing off.
7. The Plaint made a reference to the respondent by stating that
on 31/08/2023 one Galactic Conquistadors FZE (referred to as
“Galactic”) applied for registration of label ‘SETMAX’ depicted in
stylized writing
in Class 08 on a ‘Proposed to be used basis’. According to the
Plaintiff, Galactic allegedly granted a non-exclusive, non-transferable
license to RKRM International Products Pvt Ltd, i.e. Respondent
No.1 for use of its mark ‘SETMAX’ under a Permissive User
Agreement.
Somewhere in December, 2023 the Plaintiff gained the
knowledge that RKRM is planning to launch a packaging/trade dress
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bearing an identical/deceptively similar trade mark as that of Laser
Shaving, in relation to the same/similar goods. It carried out an
investigation to reveal that RKRM is marketing and one Tigaksha
Metallics Pvt. Ltd, Respondent No.2, is manufacturing safety razor
blades under an identical trade mark “SetMax” and packed in a
packaging/ trade dress which is substantial reproduction of its own
packaging/ trade dress.
The Plaintiff was able to procure the impugned trade goods in
Mumbai from the Respondent No.4, the stockist /retailer of the
impugned goods and it also gained knowledge that the said store had
purchased the impugned goods from Shree Mahavir Corporation
Respondent No.3, but the Plaintiff could not produce on record a
formal invoice / bill as despite specific request, the same was not
allowed.
8. When Laser Shaving filed its application for grant of
registration, the Trademarks Registry issued an examination report on
7/11/2023, in which Galactic’s Trademark Application No. 6093000
for
label was cited.
On 28/11/2023, Galactic issued a Cease and Desist Notice to
the Plaintiff impugning its use of the mark ‘SETMAX’ and alleging
that it constituted trademark infringement and passing off.
The Plaintiff replied to the Examination Report of the Registry
of Trademarks stating that it was a bonafide and honest user and a
legal submission was advanced that its mark was visually and
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structurally different than Galactic’s label mark of ‘SetMax’ depicted
in black lettering and white background and this was so contended in
the response furnished on 1/12/2023.
The Plaintiff also responded to the Cease and Desist Notice
issued by Galactic and submitted that it was Prior user of the mark
and therefore it had acquired superior title and had acquired
enormous goodwill and reputation by virtue of sales and promotional
expenses, and the mark was not distinctive of Galactic since it had
never used the same, and if at all it was put to use by Galactic it was
entirely dishonest attempt.
No action was thereafter taken by Galactic and the Plaintiff
presumed that its superior title acquired through prior adoption was
acceptable to it.
9. On 5/01/2024, the Plaintiff filed Notice of Opposition to
Galactic’s trademark and by comparing the two marks, specifically
pleaded its case on following grounds:-
(i) The mark and goods are the same. The packaging is virtually
identical.
(ii) The infringing goods were found in January 2024.
(iii) By their own admission, Respondents’ earliest sales took place
on 29/12/2023.
10. The Plaint had set out the comparison between the Plaintiffs
packaging/trade dress and the Defendant’s impugned packaging/trade
dress to demonstrate the close and deceptive similarity between them
and the said comparison is set out as below:-
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packaging/ trade mark packaging/ trade mark
The Plaintiff, therefore, staked its claim that the impugned
packaging/ trade dress / trade mark by the Defendant is identical with
/closely and deceptively similar to the Plaintiff’s packaging/ trade
dress / trade mark ‘SETMAX’.
It was therefore specifically pleaded that by using the
impugned packaging/ trade dress/ trade mark, the Defendants are
attempting to misguide the Plaintiff’s consumer into purchasing its
goods under the belief that the same originate from or are connected
in the course of trade with the Plaintiff and they are passing off their
impugned goods as and for the Plaintiff’s goods.
The Plaintiff therefore sought a perpetual order and injunction
restraining the Defendants by themselves their partners, proprietor,
directors, servants, stockists, dealers, distributors and all persons
claiming from using the impugned packaging/ trade dress/ trade mark
and/or any other trade mark containing the said trade mark
‘SETMAX’ and/or any other mark identical with or deceptivelyAshish
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By amending the Plaint, the Plaintiff specifically pleaded that
by the acts of infringement of copyright and passing off, the
Defendant has caused loss and/ or damage to the Plaintiff, which was
estimated at Rs.100,00,00,000/- (Rupees One Hundred Crores) and
the Defendants are liable to pay to the Plaintiff, the said amount by
way of damages.
11. In the Commercial Suit filed seeking the aforesaid relief, an
interim application was taken out by the Plaintiff, pending the
hearing and final disposal of the Suit, seeking temporary order and
injunction, thereby restraining the Defendant from using the
impugned trade mark and/or any other packaging/ trade dress/ trade
mark, which is identical with or deceptively similar to the Plaintiff’s
packaging/ trade dress/ trade mark, so as to pass off or enable others
to pass off Defendant’s impugned goods as and for the Plaintiff’s
goods in any manner whatsoever.
The learned Single Judge rejected the interim application on
25/06/2005, which gave a cause for the Plaintiff to file the present
Appeal and we have heard the argument advanced by Mr. Kadam,
representing the Plaintiff to face opposition from Mr. Patel
representing the Defendants.
12. Mr. Kadam appearing for the Appellant, would submit that in
the Suit for passing off an infringement, ad-interim relief was granted
in favour of the Plaintiff on 30/01/2024, but upon the Defendants
having invoked Order XXXIX Rule 4 of the Code of Civil Procedure,
1908, on the ground that the Plaintiff had suppressed vital
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information, and had misled the Court while it staked its entitlement
for ad-interim relief without notice to the Defendants, by order dated
2/05/2024, the ex-parte ad-interim order was vacated. He would
submit that the order was vacated only on the ground that the Plaintiff
held back the relevant material due to which the Court was unable to
examine the necessity of issuing notice to the Defendants before
considering the ad-interim relief and had the material placed before
the Court, notice would have been issued prior to consideration of the
ad-interim/ interim relief.
According to Mr. Kadam, the Court did not pronounce on the
merits of the matter and rather directed the Defendants to file their
reply to the interim application and permitted the interim relief to be
considered once the pleadings are completed. However, Mr. Kadam
submit that when the impugned order is passed by the learned Single
Judge, he has once again refused the said relief, on the ground that
there is material suppression on behalf of the Plaintiff even now, as
was the case when the ad-interim relief was procured by it. According
to Mr. Kadam, the aspect of suppression of material fact, was the
underlying reasoning in the conclusions drawn by the learned Single
Judge based upon the submissions adopted on behalf of the
Defendants, instead of applying the parameters for grant of injunction
under Order XXXIX Rule 1 and 2.
According to him the impugned order solely has its existence
in the previous order passed by the learned Single Judge, when the
ad-interim relief was vacated.
13. In addition to the above, according to Mr. Kadam, much
emphasis is laid by the learned Single Judge on the reply filed to the
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examination report dated 7/11/2023, in respect of the label mark of
Galactic and it is held that since it was admitted that the mark was
visually and structurally different from Galactic’s label mark of ‘Set
Max’, the Single Judge has erred in recording that now the Plaintiff is
estopped from deviating from the statement made before the
Registrar. Mr. Kadam, therefore, want us to determine the legal
consequences of a statement made before the Registrar and whether it
would operate as estoppel, as the learned Single Judge, has failed to
take this aspect into consideration. He would further submit that
when Galactic issued a Cease and Desist Notice on 28/11/2023, the
Plaintiff responded by staking its claim of old, established and
reputed manufacturer and seller of ‘safety razors, safety razor blades,
and shaving systems’ and it also adopted a stand that various
distinctive trade marks are used in relation to the said goods/ business
from time to time and one such trade mark which was adopted and
being continuously used in relation to the goods is ‘SETMAX’.
Relying upon the acquisition of valuable propriety and common law
right in the trade mark, the Plaintiff categorically stated that it is
entitled to the exclusive use of the said trade mark in relation to the
said goods.
A categorical stand was adopted in the reply that the trading
name and style ‘Galactic Conquistadors FZE’ make it obvious that it
do not contain the word ‘SETMAX’ in any manner whatsoever, and
it has not come across any impugned goods/business under the
impugned trade mark/name or any advertisement or promotional
material in respect thereof and therefore, it was alleged that the
impugned trade mark was never used in relation to the impugned
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goods/business in India, and this is also borne out of the fact that
Galactic’s trade marks application dated 31/08/2023 for the impugned
trade mark ‘SETMAX’ was filed for the proposed to be used basis.
On the other hand, according to Mr.Kadam by the said
response, Appellant made its stand of Prior adoption and Use very
evident and categorically stated that Galactic has not used the
impugned trade mark ‘SETMAX’ in relation to the impugned goods
in India till date, but if it was apprehensive that if and when the
impugned trade mark is used in relation to the impugned goods in
India, there will be a likelihood of confusion and deception, which
will include likelihood of association of the impugned trade mark
with Set Max and its said goods/business under the said trade mark.
While calling upon Galactic to withdraw the notice, it was also
prayed that it shall agree and undertake not to use the impugned trade
mark ‘SETMAX’ in relation to the impugned goods and withdraw its
trade mark application in class 08.
14. Mr. Kadam, specifically urge that Laser Shaving never sued
Galactic because its presence was abroad and it has not yet registered
its mark in contradiction to the Plaintiff, which has registered its trade
mark on 1/01/2026.
15. Inviting our attention to the impugned Judgment, Mr. Kadam
would submit that the learned Single Judge, has failed to consider the
sequence of events, as it pleaded its case that somewhere in January
2024, the applicant learned that Respondent No.1 was manufacturing
safety razor blades under an identical ‘SETMAX’ trade mark in
packaging which was substantially similar to the Applicant’s
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packaging/trade dress.
On 5/01/2024, the Applicant filed a notice of opposition to oppose
Galactic’s application for trade mark by specifically contending that
the same is identical to a earlier used trade mark ‘SETMAX’ of the
opponents.
On 9/01/2021, Applicant procured the impugned products in
Mumbai from Respondent No.4 to learn that they were procured
from Respondent No.3 and the Suit was filed on 15/01/2024, and on
30/01/2024, the Court granted an exparte ad-interim relief.
16. According to Mr. Kadam, Plaintiff had placed reliance upon
the affidavit of the Artist dated 26/03/2024, who deposed on oath that
the artistic work depicted by the Plaintiff in its product was designed
by him during the course of the employment and retainership and it
was a ‘original’ work, since it emanated from him as an artist and
was an expression of skill. He would therefore place reliance upon
Section 13 (1) (a) and Section 17 of the Copyright Act, 1957 and
stake its claim as a first owner of the copyright subsisting in the said
artistic work. It is his claim that as an owner of the copyright the
applicant was entitled to produce the artistic work in any material
form and by manufacturing and distributing identical /similar
infringing copies of the artistic work, the Respondents are infringing
upon the Applicant’s copyright. According to him, for infringement
of copyright, it is not necessary to establish that the infringing copy is
the exact replica of the original work, but what is to be seen whether
on comparison of the two artistic works, it was easily discernible that
one was the copy of the other, and he is insisting that in the present
case, the test is fully satisfied.
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For an action of passing off, according to Mr. Kadam, the Plaintiff is
required to prove existence of three elements (i) the plaintiff has good
will in the market (ii) misrepresentation by the defendant to the
public, (iii) loss or likelihood of it to the plaintiff and he would
submit that passing off is an action not only to protect the Plaintiff’s
reputation but also to safeguard the interest of public at large, so that
the public is not mislead and indulged in purchase of the product,
which is not the product of the Plaintiff.
17. Coming to the second point on which the learned Judge has
heavily relied upon, that is the admission given by Laser Shaving,
when it replied to the examination report dated 7/11/2023, issued in
respect of its label mark by stating that it was bona fide, where a
statement was made that the marks are different and therefore, the
Plaintiff is now estopped from claiming that the mark of the Plaintiff
and the mark of the Respondent are similar/ identical. The
observation of the learned Judge on the ground of suppression of the
applicant’s diametric opposite stand taken before the Trade Marks
Registry in respect of the very same trade mark, and its contention
that it was not aware of the connection between Galactic and
Respondent no.1, Mr. Kadam would submit that the learned Single
Judge has not considered the law laid down in this regard and
according to him the decision of the learned Single Judge in
Shantapa alias Shantesh S. Kalasgond vs. M/s. Anna1, has not
considered the decision of the Apex Court in Chhaganlal Keshavlal
Mehta vs. Patel Narandas Haribhai2, in its proper perspective.
1 2023 SCC Online Bom 2566
2 (1982) 1 SCC 223
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18. The precise point which Mr. Kadam to focus upon is what
would amount to estoppel and whether a statement made before the
Registrar of Trade Marks would amount to an estoppel when the
Plaintiff plead its case of similarity/ deceptive similarity in the two
marks and whether he can be denied relief on the ground of estoppel.
On the larger issue, Mr. Kadam has invoked the proposition of
law laid down in Laxmikant V. Patel vs. Chetanbhai Shah and anr 3,
where it is held that in an action for passing off, it is essential to seek
injunction, temporary or ad-interim and the principle for grant of
injunction are the same as in the case of any other action against
injury complained of and the Plaintiff must prove a prima facie case,
balance of convenience in his favour and irreparable injury if
injunction is not granted. He would submit that the Plaintiff is not
required to prove actual damage in order to succeed in an action for
passing off and likelihood of damage is sufficient and therefore the
Defendant’s state of mind is wholly irrelevant as to the existence of
the cause of action for passing off and injunction to be granted or
refuse would all depend upon the facts and circumstances, which are
placed before the Court.
According to Mr. Kadam, the finding rendered by the learned
Single Judge, that Respondent No.1, admittedly, the licensee of
Galactic in respect of the very same trade mark and had commenced
the sale of the impugned products, in December 2023, i.e. after the
Applicant’s representation to Galactic and Respondents have clearly
acted upon such representation and therefore the contention of the
3 (2002) 3 SCC 65
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Applicant that the Respondents have not satisfied the elements of
estoppel as laid down in the judgments in case of Kishori Lal vs
Chalitbai4, and Chhaganlal Keshavlal Mehta (supra) would not be
acceptable, apart from the fact that the judgments were in the context
of final decrees and not in context of interim application. In addition,
as regards the copyright infringement, the relief is refused to the
Plaintiff/Applicant on the ground of suppression of material fact and
its iniquitous conduct and making it a triable issue, the Single Judge
has observed that by the material placed by the Respondents on
record, it is reflected that the impugned packing / trade dress is one,
which is commonly used in the trade and was infact being used even
prior in time to the Applicant’s claim of being the original users and
since this was a triable issue, which would be determined during the
trial.
According to Mr. Kadam, in copyright there is no question of a
prior user, but when it had put its case before the learned Single
Judge, that it was the creator of the original work, and when work has
been copied by someone else than a person, who is entitled to make
use of the same, it amounts to infringement under Section 51 of the
Copyright Act, 1957 as the owner of the copyright has an exclusive
right over the same and if anyone does anything without permission/
license being granted by the owner, it amounts to infringement of
copyright. According to Mr. Kadam only certain acts are exempted
from constituting infringement of copyright and they are clearly
stipulated in Section 52.
4 1959 Supp (1) SCR 698
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Inviting our attention to Section 16 of the Copyright Act, 1957,
Mr. Kadam would urge that no person is entitled to copyright or any
similar right in any work, whether published or unpublished,
otherwise than under and in accordance with the provisions of the Act
or any other law for the time being in force and the Copyright Act, is
a complete code and if any defense is to be adopted, in an action of
infringement of the copyright, that must squarely fall within the four
corners of the statute. The defense adopted that the mark is
commonly used in trade, is no defense which falls within the scope of
the Copyright Act, 1957 qua the Plaintiff, who is the owner of the
Copyright.
19. Contesting the argument Mr. Patel, at the outset would submit
that the Plaintiff had obtained the ex-parte relief by playing a fraud
and he would place reliance upon the decision of the Apex Court in
case of S.P. Chengalvaraya Naidu vs. Jagannath5, to submit that it is
a well settled proposition of law that a judgment or decree obtained
by playing fraud on the court is a nullity and non est in the eyes of
law. According to him, fraud is an act of deliberate deception with the
design of securing something by taking unfair advantage and it is a
deception in order to gain by another’s loss.
According to Mr. Patel, one of the ground on which the
Applicant is non-suited is found in point no.(E) of the impugned
judgment, as the learned Judge noted that being a commercial suit,
the Applicant was required to have compliance of Order XI Rule 1(3)
of the CPC as amended by the Commercial Courts Act, 2015 and it
was imperative for him to annex with the Plaint all documents in
5 (1994) 1 SCC 1
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power, possession, control or custody, irrespective of whether the
same is in support of or adverse to the Plaintiff’s case. He ought to
have made a declaration that he do not have any other documents in
his power, possession, control or custody, but the Applicant had not
annexed or disclosed in the plaint, the material document pertaining
to the Application filed by Galactic in respect of the very same trade
mark, and the response of the Applicant to the Examination Report,
and to the Cease and Desist Notice and response thereto. He would
submit that the impugned order has further recorded that even
independent of the provision of order XI as amended by the
Commercial Courts Act, the litigant shall not decide what facts are
material for adjudicating a case and what are not, but a litigant must
disclose all the facts of the case and must leave the decision making
to the Court. The Judge according to Mr. Patel has arrived at a
conclusion that the Applicant has consciously not annexed its
response to the Examination Report as well as the Cease and Desist
Notice issued by Galactic and when the suppression was clearly
willful and deliberate.
20. Learned counsel, Mr. Patel, would lay his emphasis on the
decision in case of Amar Singh vs. Union of India 6, and he would
submit that the Courts have frowned upon the litigants who would
with an intent to deceive and mislead, initiate proceedings without
full disclosure of facts, and it is held that the litigants who comes to
the Court with ‘unclean hands’ are not entitled to be heard on merits.
Similarly, he would draw benefit from the observations of Delhi High
Court in case of Lightbook and anr vs. Pravin Shriram Kadam and
6 (2011) 7 SCC 69.
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ors7 , where it is held that every litigant, who approaches the Court is
required to place the cards on the table, face up, as a court which does
not have the same before it, cannot dispense justice as it should.
He would also invoke the principle laid down in Popaat Jamal
& Sons vs. N.M. Venkatachalapathy alias Babulal and anr8, a
decision of Madras High Court, which reiterated the principle that the
Plaintiffs, who have not approached the Court with clean hands are
guilty of fraud, suppression of facts and misrepresentation and are not
entitled for any relief and it is further held that a fraud is proved when
it is shown that a false representation has been made (i) knowingly or,
(ii) without belief in its truth, or (iii) recklessly, careless whether it is
true or false.
Mr. Patel has also placed reliance upon the following decisions:-
(i) Vee Excel Drugs & Pharmaceuticals Ltd. Vs HAB
Pharmaceuticals & Research LIM9
(iii) Quantum Hi-Tech Merchandising Pvt. Ltd vs. LG Electronics
India Pvt Ltd. And Ors11 .
21. It is also the submission of Mr. Patel that the scope for
interference in the findings rendered by the learned Single Judge is
very limited, as it is based on factual aspect, which have been
appreciated by the Court. By relying upon the decision in case of
Wander Ltd. V Antox India (P) Ltd.,12 it is his categorical submission
7 2023 SCC Online Del 2308.
8 2006 (5) CTC 251.
9 (2009) 111 DRJ 192.
10 (2008) 152 DLT 405.
11 2025 SCC Online Del 8238.
12 1990 Supp SCC 727.
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that the Appellate Court would not interfere with the exercise of
discretion of the Court of first instance and substitute its own except
where the discretion has been shown to have been exercised
arbitrarily, or capriciously or perversely or where the Court had
ignored the settled principles of law regulating grant or refusal of
interlocutory injunctions. He would submit that the Appellate Court
would not normally be justified in interfering with the exercise of
discretion on the ground that if it had considered the matter at the
trial stage it would have come to a contrary conclusion, and if the
discretion has been exercised by the trial court reasonably and in a
judicial manner the fact that the appellate court would have taken a
different view may not justify interference. Thus, he would submit
that once the Court has held that the Plaintiff had adopted a
fraudulent approach, which disentitled him for the relief, the
Appellate Court, has very little scope for interference.
22. We have heard the counter submissions advanced as a
challenge is raised to the order dated 25/06/2025, where the interim
application filed by the Applicant/Plaintiff in COMIP Suit No .44 of
2024 for infringement of the Plaintiff’s copyright in its original
artistic packaging / trade dress and in an action for passing off, the
injunction is refused.
We must gloss over the important events with reference to the
dates of its occurrence;
(i) On 31/08/2023, Galactic, a Limited liability Company
incorporated in Dubai, applied for registration of the label
‘SETMAX’ depicted as ‘SetMax’ under Class 8 of the Trademarks
Act, 1999 on a ‘proposed to be used basis’.
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(ii) On the very next date i.e. on 01/09/2023, the Applicant Laser
Shaving applied for the registration of the trademark of the word
‘SETMAX’ also under class 8.
(iii) On 18/09/2023, Laser Shaving also applied for registration of the
label mark under Class 8 under the Trade Marks Act, 1999.
(iv) On 15/10/2023, a Permissive User Agreement is executed
between Galactic and RKRM International Products, under which
Galactic conferred non-exclusive, non-transferable licence to use its
trade mark.
(v) On 07/11/2023, Trade Marks Registry issued an Examination
Report in respect of Application No. 6115810 of Laser qua the label
mark, in which the objection was raised under Section 11 (1) of the
Trademarks Act, 1999 with reference to the conflicting trade mark of
Galactic.
(vi) On 20/11/2023, an Examination Report was issued by Registry
of Trade Marks in respect of the Applicant’s Application No.
6093233 qua the word mark, again citing that the mark was
conflicting with Galactic’s Trademark as its Application was received
one day prior.
(vii) On 28/11/2023 Galactic issued cease and desist notice to Laser
calling upon it to (i) cease and desist from in any manner using
Galactic’s Trademark; (ii) give an undertaking to Galactic that it
would not use the trademark or trade dress from the date of the
notice; (iii) de-list and remove all references/promotions/
advertisements in respect of the trademark; and also to render a full
statement of accounts showing profits made from sale of products
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containing the impugned trade marks.
23. On 01/12/2023, the same received response from Laser
Shaving, being addressed to the Registrar of Trade Marks, Chennai.
With reference to the objection in the Examination Report that the
trade mark application is open to objection on relative grounds of
refusal under Section 11 of the Act because same/similar trade
mark(s) is/are already on record of the Registrar for the same or
similar goods/services, Laser Shaving responded thus:-
‘Following are the Mark which are cited by the Learned Examiner :-
a. It is humbly submitted that our mark “SETMAX” is visually and structurally
and completely different from the cited mark SetMax. The Applicant has filed a
colour mark which is written in white colour over a red background. Further, the
Applicant has also written the words Platinum and Superior quality Platinum
Blades along with the trade name SETMAX.
b. It is further submitted that a pool of criteria including the nature, purpose
and prospective clientele of the goods needs to be applied to judge their
similarity. Thus, the channel of distribution, class of clients, area of providing
goods/services and nature of business of other mark sharply differs from the
instant mark and makes it dissimilar. Therefore, with regard to the above
mentioned facts, it is submitted that the cited mark is overall dissimilar in all
elements to the subject mark and hence does not stand as a bar to the
registration of the subject mark.”
“In support of the above contentions, we rely upon the following decisions:-
As ruled out by Parker, J. in Re PianotistCo.s Application (1906) 23 RPC 774,
page 777also upheld in the case of Grijfithsvs Vick Chemical AIR 1959 CAL 654,
while comparing two words “You must take the two words, you must judge them
by the look and by sound, you must consider the goods to which they are to be
applied, the nature and kind of customer who would be likely to buy the goods.
Consider all the surrounding circumstances, as to what is likely to happen if
each of those trademarks is used in the normal way as a trade mark for the
goods, the respective owners of the mark. If there is likely to be confusion, the
application must be refused.”
24. Reliance is also placed in case of Cadila Health Care Limited.
Vs Cadila Pharmaceutical Limited13, setting out the rules for
comparison of trade marks and with its reference, it was suggested as
below:-
13 (AIR 2001) SC 1952
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22/38 8 IAL 26994-25.doc“In the light of facts, it needs to be noted that our mark “SETMAX” is totally
different from all the trade mark applications and it is neither the same nor
similar to any of the mark of your examination report. Therefore, our mark is
liable to get registered.
Further, we submit that the mark “SETMAX” is an invented, coined and a
fanciful adoption, which taken in its entirety, is conceptually, visually and
structurally distinguishable from the cited trademark in the Examination report.
The mere sharing of a part of the mark cannot be considered as a determinative
of deceptive similarity as it is well settled that the mark must be considered in
their entirety giving importance to the manner of representation and the meaning
conveyed by the whole. It is also well settled that coined marks must not be split
for the purpose of comparison and/or taking objection. Further, the mark applied
for, taken as whole, is visually, and conceptually different from all the marks
included in examination report.
Besides above, we may mention here that our mark “SETMAX” is being used
with effect from 1st September, 2023 whereas the cited mark is proposed to be
used. Please also associate our aforesaid label mark with our application no
6093233 dated 1-09-2023 for registration of our word mark “SETMAX”
Thus, our mark “SETMAX” is liable to get registered under the Trade Marks
Act,1999.”
25. This response is annexed with the affidavit in reply by
Respondent Nos.1 and 2, responding to the interim application filed
by the applicant, when it placed on record the copy of the Permissive
User Agreement dated 15/10/2023 as well as the copies of the
purchasers order in relation to the trade mark ‘SETMAX’ dated
5/08/2023, and also the copy of the e-registered page for trade mark
application filed by Galactic, being described as a foreign entity
praying for registration of dual mark/trade mark Set Max with the
class of goods or services being set out as razor blades, razor cases,
razor strops, electric or non-electric, shaving cases, shear blades etc,
stated as ‘proposed to be used’.
26. In the sequence of events, it is seen that it is Galactic, who
applied for registration of its trade mark to be followed by two
applications preferred by the Plaintiff/Applicant for registration of its
label mark and word mark.
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On the application received, when the Registrar of Trade
Marks notified objection under Section 11(1) of the Trade Marks Act,
1999, the mark being stated to be identical or similar to earlier marks
in respect of identical or similar description of goods and on the basis
that there existed a likelihood of confusion on part of public, the
response was sought and we have already reproduced the response of
the applicant. But admittedly, this response and the stand adopted
therein was not included in the plaint or its documents nor was it a
part of the interim application filed by the laser shaving, but it was
brought on record through the reply filed by the Respondent Nos.1
and 2.
27. When Laser shaving is confronted with an objection under
Section 11(1), by the Trade Marks Registry with reference to the
conflicting mark ‘SetMax’ of Galactic Conquistadors FZE, Dubai
UAE, which had preferred an application for registration on
31/08/2023 in regards to the goods / services razor blades, razor
case, etc, the Plaintiff clearly pleaded that their mark ‘SETMAX’ is
visually and structurally completely different from the cited mark
‘SetMax’.
It was also explained as to why it is different as the mark of
the applicant was written in white colour over a red background with
the inscription of the words Platinum and Superior quality Platinum
blades along with trade mark ‘SETMAX’. A stand was also
specifically adopted to the effect that a pool of criteria including the
nature, purpose and prospective clientele of the goods need to be
applied to judge the similarity in the mark and by considering the
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same the cited mark was dissimilar in all elements to the subject mark
and therefore it was stated to be not a bar to the registration of the
subject mark.
In the reply, there is no reference to the originality of the
copyright as is claimed by the Plaintiff, but on the other hand, it is
stated that SETMAX was invented/coined and a fanciful adoption,
which taken in its entirety, was conceptually, visually, and
structurally distinguishable from cited trademark and mere sharing of
the part of the mark cannot be considered as determinative of
deceptive similarity as mark must be considered in its entirety. A
distinction was also sought to be drawn because of the background
that ‘SetMax’ was being used from 1/09/2023, whereas the cited
mark is ‘Proposed to be used’.
28. The aforesaid factor turned out to be the determining
consideration before the learned Judge, when the Applicant filed an
application for injunction and contended that Galactic’s trade mark
application was on a ‘Proposed to be used basis’ and it was pending
for registration and mere filing of an application for trade mark
registration prior in point of time was not a bar to the applicant’s
claim for passing off, since the applicant was a prior user and
therefore, was entitled for injunction against Respondent Nos.1 to 4.
In contrast, the Defendants specifically adopted a stand of
suppression of material fact and prosecution history estoppel by
submitting that the Plaintiff/Applicant had willfully and deliberately
suppressed its response to the Examination Report dated 7/11/2023
and its response to the ‘Cease and Desist’ Notice by Galactic.
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Reliance was placed upon Notice of Opposition dated
5/01/2024, filed by the Applicant opposing Galactic’s application for
trademark on the ground that Galactic’s trademark is identical to
earlier used trade mark ‘SETMAX’ of the Plaintiff.
The relief in the interim application was opposed on the ground
of willful and deliberate suppression of the aforesaid facts and
adoption of diametrically opposite stand before the Trade Marks
Registry. It was therefore submitted that the applicant had not
approached the Court with clean hands and it had suppressed material
information and that is the reason why the ex-parte interim order
granted on 02/05/2024 came to be vacated.
29. There cannot be any dispute about the proposition in law that a
person, who do not come to the court with the clean hands is not
entitled to be heard on merits of his grievance and rather is not
entitled for any relief. The object underlying this principle being, that
the Court is not only entitled but is duty bound to protect itself from
unscrupulous litigants, who do not have any respect for truth and who
try to pollute stream of justice by resorting to falsehood or by making
misstatement or by suppressing facts, which shall have a bearing on
adjudicating of the issue(s) arising in the case.
In Ramjas Foundation and anr vs. Union of India and ors14 ,
the Apex Court reiterated the principle by reference to the precedents
and we deem it appropriate to reproduce the relevant observation:-
“22. In Dalglish v. Jarvie, Mac & G at p. 238, Lord Langdale and Rolfe, B.
observed: (ER p. 89)
“It is the duty of a party asking for an injunction to bring under the notice of
the court all facts material to the determination of his right to that injunction;
and it is no excuse for him to say that he was not aware of the importance of any14 (2010) 14 SCC 38.
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fact which he has omitted to bring forward."
23. In Castelli v. Cook, Hare at p. 94, Wigram, V.C. stated the rule in the
following words: (ER p. 38)
“… a plaintiff applying ex parte comes … under a contract with the court that he
will state the whole case fully and fairly to the court. If he fails to do that, and
the court finds, when the other party applies to dissolve the injunction, that any
material fact has been suppressed or not properly brought forward, the plaintiff
is told that the court will not decide on the merits, and that, as he has broken
faith with the court, the injunction must go.”
24. In Republic of Peru v. Dreyfus Bros. & Co.7, LT at p. 803, Kay, J. held as
under:
“I have always maintained, and I think it most important to maintain most
strictly, the rule that, in ex parte applications to this Court, the utmost good faith
must be observed. If there is an important misstatement, speaking for myself, I
have never hesitated, and never shall hesitate until the rule is altered, to
discharge the order at once, so as to impress upon all persons who are suitors in
this Court the importance of dealing in good faith in the Court when ex parte
applications are made.”
28. The abovenoted rules have been applied by this Court in a large number of
cases for declining relief to a party whose conduct is blameworthy and who has
not approached the Court with clean hands — Hari Narain v. Badri Das,
Welcom Hotel v. State of A.P. , G. Narayanaswamy Reddy v. Govt. of Karnataka ,
S.P. Chengalvaraya Naidu v. Jagannath, A.V. Papayya Sastry v. Govt. of A.P ,
Prestige Lights Ltd. v. SBI, Sunil Poddar v. Union Bank of India, K.D. Sharma v.
SAIL, G. Jayashree v. Bhagwandas S. Patel and Dalip Singh v. State of U.P. “
30. In Dalip Singh vs. State of U.P.,15 the Hon’ble Apex Court
focused upon the emerging creed of dishonest litigants and
deprecated the same in following words:-
“1. For many centuries, Indian society cherished two basic values of life i.e.,
“Satya” (truth) and “ahimsa” (non-violence). Mahavir, Gautam Buddha and
Mahatma Gandhi guided the people to ingrain these values in their daily life.
Truth constituted an integral part of justice-delivery system which was in vogue
in pre-Independence era and the people used to feel proud to tell truth in the
courts irrespective of the consequences. However, post-Independence period has
seen drastic changes in our value system. The materialism has overshadowed the
old ethos and the quest for personal gain has become so intense that those
involved in litigation do not hesitate to take shelter of falsehood,
misrepresentation and suppression of facts in the court proceedings.
2. In last 40 years, a new creed of litigants has cropped up. Those who belong
to this creed do not have any respect for truth. They shamelessly resort to
falsehood and unethical means for achieving their goals. In order to meet the
challenge posed by this new creed of litigants, the courts have, from time to time,
evolved new rules and it is now well established that a litigant, who attempts to
pollute the stream of justice or who touches the pure fountain of justice with
tainted hands, is not entitled to any relief, interim or final.”
15 (2010) 2 SCC 114.
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31. This principle found to be reiterated in Amar Singh vs. Union
of India (supra), when the Apex Court recorded thus:-
“53. Courts have, over the centuries, frowned upon litigants who, with intent to deceive
and mislead the courts, initiated proceedings, without full disclosure of facts. Courts held
that such litigants have come with “unclean hands” and are not entitled to be heard on
the merits of their case.”
32. This principle when applied to the Commercial Courts Act,
2015, which has made the Code of Civil Procedure applicable to the
trial of Suits with modification set out in Section 16 to be read with
Schedule I, Order XI of the Code of Civil Procedure, relating to
disclosure, discovery and inspection of documents being modified,
Rule 3 of Order XI reads thus:-
“The plaint shall contain a declaration on oath from the plaintiff that all
documents in the power, possession, control or custody of the plaintiff,
pertaining to the facts and circumstances of the proceedings
initiated by him have been disclosed and copies thereof annexed with the plaint,
and that the plaintiff does not have any other documents in its power, possession,
control or custody.
Explanation.–A declaration on oath under this sub-rule shall be contained in
the Statement of Truth as set out in the Appendix.”
33. Since, the Plaintiff kept away from the Court, the documents
dated 1/12/2023 in form of its reply to the Examination Report of the
Trade Marks Registry dated 7/11/2023, in respect of its label mark
and which was brought on record by the Respondents along with
their reply affidavit, the learned Single Judge held thus:-
“B. Second, even on an independent consideration of the suppressed material
none of which is either disputed or denied, I have no hesitation in holding that
there has been a suppression of material facts by the Applicant. The Applicant
has, without so much as even the semblance of an explanation, in respect of the
very same trademark, taken a diametrically opposite stand in the Plaint from the
stand taken by the Applicant before the Trade Marks Registry. Hence, even
accepting the Applicant’s contention that the Applicant was unaware of the
connection between the Respondents and Galactic, what is crucial to note is how
the Applicant could, in respect of the very same trademark before the Trade
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the market” and yet in the Plaint in respect of the very same trademark in the
Plaint state that the said mark is “identical with/closely and deceptively similar
with the Plaintiffs said packaging/trade dress/trademark….”
34. We do not find any illegality in the aforesaid observation as a
finding is rendered that there was suppression of material fact by the
Applicant and this was not disputed or denied.
Even today, Mr. Kadam has urged before us that he has not
included it in the Plaint or Interim Application as his Suit was for
passing off and he was not aware about the relationship of
Respondent No.1 with Galactic, and he has assertively submitted that
there was no question of any fraud being played, as he was unknown
of the relationship and there was no deliberate attempt to conceal any
relevant material.
35. Dealing with such an approach of the Respondent, we are
guided by the principle of law laid down by the Apex Court in case of
Bhaskar Laxman Jadhav v. Karamveer Kakasaheb Wagh Education
Society and Ors16, where it is categorically held that by virtue of
Order 6 Rule 2 it is imperative for the Plaintiff to file a plaint
containing statement in a concise form of the material facts on which
the party pleads reliefs for its claim or defense and it is duty of the
litigant to disclose all material facts and it is not for him to decide
that which fact is material and which is not. In the background of the
facts, the Apex Court observed thus:-
“42. While dealing with the conduct of the parties, we may also notice the
submission of learned counsel for Respondent No.1 to the effect that the
petitioners are guilty of suppression of a material fact from this Court, namely,
the rejection on 2-5-2003 of the first application for extension of time filed by the
trustees and the finality attached to it. These facts have not been clearly
disclosed to this Court by the petitioners. It was submitted that in view of the
suppression, special leave to appeal should not be granted to the petitioners.
16 (2013) 11 SCC 531.
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43. The learned counsel for the petitioners submitted that no material facts have
been withheld from this Court. It was submitted that while the order dated 2-5-
2003 was undoubtedly not filed, its existence was not material in view of
subsequent developments that had taken place. We cannot agree.
44. It is not for a litigant to decide what fact is material for adjudicating a case
and what is not material. It is the obligation of a litigant to disclose all the facts
of a case and leave the decision-making to the Court. True, there is a mention of
the order dated 2-5-2003 in the order dated 24-7-2006 passed by the JCC, but
that is not enough disclosure. The petitioners have not clearly disclosed the facts
and circumstances in which the order dated 2-5-2003 was passed or that it has
attained finality”.
36. The Apex Court also reiterated the Principle in Ramjas
Foundation (supra) that a litigant, who do not come to the Court with
clean hands is not entitled for any relief from any judicial court.
Therefore, we do not find any fault in the learned Single Judge
taking note that the suppression of the fact and refusing the
discretionary relief of injunction in its favour.
37. Though an attempt is made by Mr. Kadam to urge before us
that this was the precise ground on which the ad-interim order
granted on 30/01/2024, was vacated on 2/05/2024, we must note that
the said order pronounces upon an application filed under Order
XXXIX Rule 4 by the Defendant, alleging that the Plaintiff has
suppressed vital information. The application relied upon the
documents submitted to the Registrar of TradeMarks pursuant to the
Examination Report dated 7/11/2023, where the Plaintiff had adopted
a specific stand that its mark did not resemble with the mark of the
licensor of defendant no.1, enclosed by the Registrar of Trade Mark
with the Examination Report.
It was urged that these documents were relevant and within the
knowledge of the Plaintiff and they ought to have been placed before
the Court along with the Plaint so that the Court would have got an
opportunity to examine the claim of the Plaintiff before any ad-
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interim / interim order could be granted. It was therefore urged that
stand adopted by the Plaintiff before the Registrar of Trade Mark
concerning analysis and interpretation of its own mark, when
compared to the mark of Galactic, which was being used by the
Defendants as licensees, the injunction was sought to be vacated.
With Reference to Order XXXIX Rule 4 of the CPC, the
learned Single Judge on examination of the material placed on record
came to the following conclusion:-
“37. The pleadings in the plaint and the said cease and desist notice, reply
thereto and the reply of the plaintiff to the examination report of the Registrar of
Trademarks, all pertaining to November 2023 and December 2023, indicate that
such material held back by the plaintiff, was indeed relevant and it should have
been placed before this Court. The absence of such material gave a different
colour to the claims made by the plaintiff and this is the only relevant factor
while deciding the present application filed under Order XXXIX Rule 4 of the
CPC. Hence, the aforesaid judgment in the case of Asma Farid Noorani v/s. Haji
Ali Fresh Fruit Juices & Ors. (supra), is distinguishable.
39…..The emphasis placed on behalf of the plaintiff on the colour scheme of the
label, placement of text, etc. at this stage, is irrelevant, particularly, when the
statements made on behalf of the plaintiff before the Trademarks Registry in
respect of the device mark are appreciated. In any case, as noted hereinabove,
the suppression of vital material vitiates everything and it would equally apply to
the claim of copyright made on behalf of the plaintiff, in the context of its right
for ad-interim reliefs without notice to the defendants. This Court clarifies that
the aforesaid observations are being made only in the context of the question as
to whether sufficient grounds are made out by the defendants for vacating the ex-
parte ad-interim order under Order XXXIX Rule 4 of the CPC. The said
observations are not to be construed as any comment on merits, as regards the
claim of the plaintiff regarding copyright in its artistic work concerning the mark
“SET MAX”.
40. The failure on the part of the plaintiff to place the aforesaid material on
record along with the plaint and/or with the application for interim reliefs does
make out a case for the defendants to claim applicability of the first proviso of
Order XXXIX Rule 4 of the CPC, thereby justifying its prayer for vacating the
ex-parte ad-interim order. This has nothing to do with the merits of the rival
claims and it has everything to do with ensuring the integrity of the judicial
process. Therefore, the present application deserves to be allowed.”
38. Though, it is vehemently urged before us that the impugned
order is once again based upon the very same reason, we do not agree
with the said contention, as we find that on 02/05/2024, what was
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decided was an application under order XXXIX Rule 4 of CPC, and
therefore the ad-interim reliefs granted ex-parte in favour of the
Plaintiff was vacated, but it was made clear that the observations
were not on the merits of the rival claims but it focused upon the
integrity of the judicial process.
39. Applying the well settled Principle that a party, who seeks
discretionary relief in form of an interim injunction must approach
the Court with clean hands and if it does not do so, the relief can be
refused, is evidently clear from the decision in case of Amar Singh,
Dalip Singh, Ramjas Foundation (supra). We do not find any
illegality in the impugned order, when the learned Single Judge on
merits once again considered the said aspect, as it found that the
Defendant has suppressed the material facts and even while
considering grant of relief in form of an injunction it would be a
material fact, and it weighed with the learned Single Judge, who
found it to be one of the factor in not granting the relief amongst rest
of the factors.
40. Another relevant submission for consideration before the
learned Judge was that what is the effect of the admission in the
response dated 1/12/2023 when the Applicant replied to the
Examination Report dated 7/11/2023 and clearly admitted that its
mark was visually and structurally different than Galactic’s label
mark of ‘SetMax’ depicted in black lettering and white background.
In case of Chhaganlal Mehta (supra), the concept of estoppel
under the Evidence Act, 1872 received consideration when it was
compared against the admissions given by a party and in paragraph
21, it is held as below:-
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32/38 8 IAL 26994-25.doc“21. The difference between an admission and estoppel is a marked one. Admissions
being declarations against an interest are good evidence but they are not conclusive
and a party is always at liberty to withdraw admissions by proving that they are
either mistaken or untrue. But estoppel creates an absolute bar. In this state of the
legal position, if the endorsement made by Chimanrai or by his widow, Chhotiba or
his daughter Taralaxmibai amounts to an estoppel they are their transferees would
be prevented from claiming the property.”
41. In order to amount to estoppel, the test was laid down as
below:-
“23. To bring the case within the scope of estoppel as defined in Section 115 of
the Evidence Act : (1) there must be a representation by a person or his
authorised agent to another in any form – a declaration, act or omission; (2) the
representation must have been of the existence of a fact and not of promises de
futuro or intention which might or might not be enforceable in contract; (3) the
representation must have been meant to be relied upon; (4) there must have been
belief on the part of the other party in its truth; (5) there must have been action
on the faith of that declaration, act or omission, that is to say, the declaration,
act or omission must have actually caused another to act on the faith of it, and to
alter his former position to his prejudice or detriment; (6) the misrepresentation
or conduct or omission must have been the proximate cause of leading the other
party to act to his prejudice; (7) the person claiming the benefit of an estoppel
must show that he was not aware of the true state of things. If he was aware of
the real state of affairs or had means of knowledge, there can be no estoppel; (8)
only the person to whom representation was made or for whom it was designed
can avail himself of it. A person is entitled to plead estoppel in his own
individual character and not as a representative of his assignee.”
42. Mr. Kadam has relied upon the decision of the Apex Court in
case of Kishori Lal vs Chalitbai (supra), which according to him has
laid down a proposition of law that when both the parties are equally
conversant with true facts the doctrine of estoppel is inapplicable and
reliance is placed upon the decision of Privy Council in case of
Mohori Bibi v. Dhurmodas Ghose17, where it is held that there can be
no estoppel where truth of the matter is known to both parties.
We wonder as to how this principle apply to the case in hand.
43. Estoppel is a legal principle that prevents a person from
asserting a claim, right, or fact that contradicts its own previous
actions, statements, or representations, especially if someone else has
17 (1902) 30 IA 114.
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relied on them to their detriment. Estoppel is thus an equitable
doctrine that prevents someone from asserting a claim or right that
contradicts the one which is asserted. It is the legal bar in alleging or
denying a fact because of one’s own previous actions or words to the
contrary.
The said principle ensures fairness and prevents injustice by
holding parties to their own words, it prevents contradiction, as it is
not permissible for the party to approbate and reprobate; that is, one
cannot accept a benefit while later deny the obligation associated
with it. Estoppel is often recognized as a rule of evidence that
prohibits denying what has been previously established as true, and
this common law principle is found incorporated in Indian Evidence
Act, 1872.
On behalf of the Defendant, what was pressed into service is
prosecution history estoppel as it was urged that in the proceedings
before the Registrar of Trade Marks a stand was adopted and whether
it estopped the Plaintiff from taking another stand, while establishing
its case for infringing and passing off through the Suit.
The doctrine of prosecution history estoppel seeks to estop a
person from claiming any advantage associated with a right which he
has consciously waived in previous proceedings, and we are guided
by the elaborate pronouncement on doctrine of ‘Prosecution History
Estoppel’ by the learned Single Judge of this Court in case of
Shantappa @ Shantesh (supra), when this doctrine predominantly
used in patent infringement was noted to be increasingly applied to
trademark infringement actions.
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The learned Single Judge (Justice Sandeep Marne) has referred
to the plethora of precedents about the applicability of the doctrine to
trademark infringement and passing off actions, and with reference
to Section 115 of the Indian evidence Act, 1872, concluded thus:-
“45. Thus a consistent view taken in above quoted judgments is that a stand
taken by the Plaintiff in previous proceedings, including the proceedings for
registration of trademark, would continue to haunt him in all subsequent
proceedings and would be a relevant factor while deciding Plaintiff’s entitlement
for temporary injunction. In most of the above judgments, non-disclosure of
previous stand by Plaintiff is also held to be relevant factor for deciding
injunction. However that aspect is being discussed separately in the judgment.
For the moment, it would be necessary to concentrate on the issue of
‘prosecution history estoppel”
44. The aforesaid conclusion is derived on the basis of the
precedents, with reference to the decision of parent High Court as
well as Delhi High Court, and a conclusion is arrived to the effect
that non-disclosure of the previous stand by the Plaintiff is a relevant
factor for deciding injunction. Exhaustive reference is also made to
the line of decisions, invoking the principle of non-applicability of
estoppel against the statute, trying to suggest that the stand taken by
a party during the procedure for registration of trade mark would be
confined to registration proceedings only and would not haunt the
Plaintiff in an infringement proceedings.
Once again with reference to the pronouncements to that effect,
the learned Single Judge arrives at a following conclusion:-
“55. After having analyzed the judgments on the issue of applicability of
principle of estoppel in actions for infringement of trademark and/or passing
off, I am of the view that the stand taken by a party in proceedings for
registration of a Mark cannot be ignored in each and every proceeding filed for
infringement or passing off. In the present case, the doctrine of prosecution
history estoppel would fully apply where Plaintiff has twice made a
representation before the Trademark Registry that there is no resemblance
between his and the Defendant’s Marks. He took that stand with full knowledge
that Defendant was intending to use the Mark ‘ANNA’ for same class of goods
and services. He thus led Defendant to believe that the Defendant was free toAshish
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using the Mark ‘ANNA’. Plaintiff cannot now be permitted to take a volte face
and contend that the two marks are deceptively similar.”
45. Shantapa (supra) is thus a decision, on the issue of applicability
of principle of estoppel in action for infringement of trade mark
and /or passing off and it is held that the stand adopted by a party in a
course of proceedings for registration of a mark cannot be ignored,
and in the facts of the case, where the Plaintiff made representation
before the Trade Marks Registry that there was no resemblance
between his and the Defendant’s Marks and having adopted a stand
with full knowledge that the Defendant was intending to use the mark
ANNA for same class of goods and services, it was held that the
Plaintiff cannot be permitted to take a contrary stand and contend that
the two marks are deceptively similar.
46. Similar is the situation before us as, we have noted that while
responding to the Examination report, when the Plaintiff was
confronted with Galactic’s trademark, it categorically adopted a stand
that the two marks are visually and structurally different and there is
no likelihood of any confusion and therefore its mark was sought to
be registered. When for the purposes of ascertaining its claim for
registration of its mark, the Plaintiff with respect to the objection
raised by the Registry of Trade Mark claim that the mark of Galactic
was visually and structurally different and there was no resemblance,
it adopted a stand that its mark ‘SetMax’ do not resemble with the
other mark enclosing the Examination Report, and the same is not
identical with or similar to earlier marks in respect to similar
description of goods, and no similarity exists, which may likely to
deceive or cause any confusion on part of the public in the market.
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With the categorical statement that, their mark 'SetMax'
cannot be deemed to be similar or deceptively similar or identical
and there was no question of conflict, as the mark ‘SetMax’ being a
distinctive one qualify for registration, we are also of the view that
the said stand haunt the Plaintiff, even in this proceeding, when he
seeks injunction restraining the Defendants from using its mark on the
ground that it is deceptively similar to the Plaintiff’s mark.
47. A serious attempt is made on behalf of Mr. Patel to submit that
non- disclosure of relevant material amounts to fraud and he has
relied upon the decision in case of S.P. Chengalvaraya Naidu (supra),
but we do not subscribe to the said view as fraud involves a mental
element, as it is intentional deception for unfair gain or undue
advantage.
Fraud becomes a crime when it is ‘known misrepresentation of
truth’ and such fraud avoid all judicial acts and any judgment or
decree obtained by playing fraud is in nullity and cannot be enforced.
However, in our view, fraud is a matter of evidence and at this stage,
we cannot conclusively establish whether there is a fraud played by
the Plaintiff, but suffice it to note that the Plaintiff has not come
before the Court with clean hands and having discredited himself, the
Single Judge has refused him the interim relief.
Though, a feeble attempt is made by Mr. Kadam in submitting
that there is no reliance placed on the representation made by the
Plaintiff and ultimately passing off is an action to prevent public from
being mislead and in absence of the Plaintiff being aware about the
relationship between the Respondent No.1 and Galactic, he cannot be
accused of intentional suppression, we can only observe that in grant
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of discretionary relief under Order XXXIX (1) and (2), the learned
Single Judge has rightly refused any indulgence on two counts; firstly
the Plaintiff had suppressed the relevant material, and secondly on
the count of estoppel as he has adopted a stand in the previous
proceedings before the Registrar of Trade Marks, that the mark which
it had presented for registration is not similar to the mark of Galactic
for which an application was made for registration and there is no
scope for any confusion in the minds of its user and we find that this
has justified the learned Single Judge in refusing the discretionary
relief in favour of the Plaintiff.
48. Another ground on which the relief is refused to the Plaintiff
is, the Applicant despite admittedly being aware that Galactic had
filed an application for registration in respect of the very same
trademark, it has chosen not to make Galactic as a party to the Suit
and the Judge has recorded in Para (H) that ‘the reason is not far to
seek, since had Galactic being made a party, the Applicant would
never have moved for exparte ad-interim relief’.
Recording that the licensee of Galactic in respect of the very
same trade mark had commenced the sale of impugned products in
December, 2023, after Applicant’s representation to Galactic and
therefore, it is concluded that Galactic and the Respondents have
acted upon such representation and therefore, the contention that the
Respondents have not satisfied the elements of estoppel as laid down
in case of Kishori Lal and Chhaganlal Mehta (supra) was held to be
not applicable, and we do not find any perversity in the said finding
rendered by the learned Single Judge in refusing the relief of
temporary injunction in favour of the Plaintiff.
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49. Considering the limited scope of interference as laid down by
the Apex Court in case of Wander Limited (supra), determining the
scope of an appeal, and unless the findings rendered in the
judgment/order under challenge are perverse, it is not open for us to
substitute the discretion exercised by the Court and since the
Appellant has failed to prove before us that the discretion is arbitrary
exercise of power we refrain ourself from interfering with the
impugned order. By upholding impugned order dated 25/06/2025, we
dismiss the present Commercial Appeal .
As a result, the pending interim application is also disposed of.
(MANJUSHA DESHPANDE, J.) (BHARATI DANGRE, J.)
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